Judge Denies Apple’s Request to Ban 8 Samsung Phones

The Samsung Galaxy S 4G, one of the phones Apple hoped to have banned for sale in the U.S. Photo: Jim Merithew/Wired

Samsung can continue selling eight smartphones, including the Galaxy S II, that infringed on Apple’s patents, a federal judge has ruled, handing the Korean company a small victory in its ongoing patent war with Apple.

It didn’t all go Samsung’s way, however. U.S. District Judge Lucy Koh also denied the company’s request for a retrial in the case, in which the two sides accused each other of infringing on patents. Apple claims Samsung copied the design of its iPhone and iPad and UI elements of iOS, while Samsung says the Cupertino company infringed on its 3G patents.

The tech giants have been fighting a patent war in courtrooms worldwide, and in August a nine-member jury in San Jose determined Samsung owed Apple more than $1 billion for infringing Apple’s patents. Koh will over the next month or so issue orders parsing the details of the verdict and consider, among other things, whether Apple will be awarded more, or less, than what the jury stipulated.

Koh issued her first big ruling late Monday, saying she will not grant an injunction barring the sale of eight Samsung phones because there is no evidence suggesting consumers specifically sought the features Samsung copied from Apple.

“Weighing all of the factors, the Court concludes that the principles of equity do not support
the issuance of an injunction here,” she wrote. “The fact that Apple may have lost customers and downstream sales to Samsung is not enough to justify an injunction. Apple must have lost these sales because Samsung infringed Apple’s patents.” [Emphasis included as appears in the order.]

Koh also reasoned that an injunction would not be in the public’s interest, and it’s not like Apple isn’t already going to be compensated handsomely for Samsung’s patent violations.

“We are pleased that the judge denied Apple’s move to limit consumer choice, and restrict fair competition in the marketplace,” a Samsung representative told Wired via email. Apple did not respond to a request for comment.

As for user interface IP infringement, Judge Koh wrote Tuesday: “Though Apple does have some interest in retaining certain features as exclusive to Apple, it does not follow that entire products must be forever banned from the market because they incorporate, among their myriad features, a few narrow protected functions… The fact that none of the patented features is core to the functionality of the accused products makes an injunction particularly inappropriate here.”

“The issue is that if Apple’s able to get an injunction even though features at issue only make up 1/1000 of the number of features of the phone, it potentially greatly exaggerates the value of the contribution that Apple’s patents actually make,” Notre Dame Law School professor Mark P. McKenna told Wired. “I was glad to see a court take that seriously. [Koh] basically said ‘These features maybe have some value, but they’re not the reason why people buy the Samsung phone, there are lots of other things.'”

McKenna said that the real interesting question is what will Judge Koh will do with the damages award as a result of this. He thinks it could go one of two ways: One interpretation is that she has indicated these patents are not worth very much to the value of Samsung’s products, and could thus knock down the $1 billion award to a smaller amount. Alternatively, it could indicate more of a tradeoff — That she believes the damages make Apple whole and will let the verdict stand, but simply is not giving it an injunction.

In a separate order, Koh declined Samsung’s request for a retrial, which the company filed amid claims the jury foreman, Vel Hogan, hid information from the court about his involvement in a lawsuit with Seagate, with whom Samsung has a “substantial strategic relationship.” She noted that Samsung had no complaints about the the jury’s handling of the case when deciding damages, so it can’t complain now.

“Samsung repeatedly praised the jury, noting the care, precision, and consistency with which the jury calculated damages based on trial damages evidence,” she wrote. “Samsung cannot credibly claim that the jury’s conduct was simultaneously worthy of such great praise and so biased as to warrant a new trial.”

Following a lengthy explanation citing a number of past cases, Koh said Hogan’s post-verdict statements shouldn’t be considered because of “the integrity of the jury system and the Federal Rules of Evidence.”

Judge Koh also issued an order Friday that she was declining to rule on Apple’s FRAND defenses against Samsung’s patents in the case. That is, Apple was hoping to make the patents Samsung asserted against Apple’s products unenforceable in future IP litigation. The jury found Apple didn’t infringe upon those patents in the first place, so Koh decided not to rule on the issue at this time.